Silk case does not go smoothly
Jack Kenny summarises an opposition in which he represented the applicant. O/704/19, JT International SA v P.T. Sumatra Tobacco Trading Company, UK IPO, 21st November 2019
The UK IPO has dismissed an opposition filed against an application for HOUSE OF SILK after finding no likelihood of confusion with the Opponent’s SILK CUT marks.
JT International SA (the Opponent) filed an opposition against the application in the name of P.T. Sumatra Tobacco Trading Company (the Applicant), which had been filed in respect of cigarettes, tobacco and related goods. The Opponent invoked s5(2)(b) and s5(3) of the Trade Marks Act 1994 (the Act), relying on its UK registrations for SILK and SILK CUT covering identical and similar goods.
The Applicant requested proof of use of the Opponent’s marks. The Opponent’s evidence consisted of sales and turnover figures, and examples of how the mark SILK CUT had been used on cigarette products. While the Hearing Officer (HO) was satisfied that there had been use of the SILK CUT mark, there was no such evidence for the SILK mark.
The HO then turned to the question of whether use of the mark SILK CUT could constitute use of SILK. The HO noted that use of a sign differing from a registered trade mark can constitute genuine use if the differing elements do not alter the mark’s distinctive character. Nevertheless, the word SILK would be perceived as a reference to the qualities of silk (ie, smooth), and so the word did not retain an independently distinctive role in SILK CUT. Consequently, the HO agreed with the Applicant’s submission that the Opponent could not rely upon its SILK mark.
Turning to a comparison of the marks, the HO noted that due to tobacco regulations in the UK, the customer must make a verbal request when purchasing the goods. Therefore, an aural comparison of the marks was particularly important. Visual considerations would also be important, as the customer would likely have sight of the product at the point of purchase.
As the average consumer would not proceed to break down the marks into their various elements, the HO determined that the overall impression of the marks lay in the combination of the word elements as a unit (HOUSE OF SILK and SILK CUT), with no individual words dominating in either mark. Therefore, despite the overlap of the word SILK, the marks were deemed similar only to a low degree when compared visually, aurally and conceptually.
The evidence submitted by the Opponent allowed the HO to conclude that the distinctive character of the mark SILK CUT had been enhanced to a high to medium degree through use. Nevertheless, the HO did not find a likelihood of confusion, particularly due to the low degree of similarity between the marks.
Considering indirect confusion, the HO also held that the average consumer would not conclude that the marks originated from the same or economically linked undertakings, nor would either mark be perceived as a brand extension of the other.
Turning to s5(3) of the Act, the HO concluded that the mark SILK CUT had a moderate reputation. However, the average consumer would not make a link between the two marks so no unfair advantage could be conferred by the Applicant. As a result, the opposition was rejected in its entirety.
- Use of a sign differing from a mark as registered must only differ in elements that do not alter the mark’s distinctive character
- Even where the earlier mark has a reputation, a link must still be made between the marks for any unfair advantage to be taken
The author represented P.T. Sumatra Tobacco Trading Company in these proceedings.
Marks & Clerk LLP